DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/12/26 has been entered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 7-13, and 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1, 7-13, and 19-20 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being and/or the rules of a game.
In regard to Claims 1, 13, and 20 the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or claim the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming:
[a visual] object control method comprising:
displaying a [visual display] comprising a first control displaying a first [visual] item currently used by the [visual] object and an item switching control;
switching the first [visual] item in the [visual display] to a second [visual] item in response to a first operation on the item switching control, the first operation comprising a touch control operation on the item switching control having a touch control duration less than a duration threshold, the second [visual] item being next in line after the first [visual] item in an item list, and controlling a [visual] object to handhold the second [visual] item; and
displaying the item list at the item switching control in a form of a switching wheel centered at the item switching control, receiving a selection instruction selecting a third [visual] item from the item list by a dragging instruction from the item switching control to the third [visual] item within the item list, and switching the second [visual] item in the user interface to the third [visual] item in response to a second operation on the item switching control, the second operation comprising a continuous press on the item switching control, the continuous press having a touch control duration greater than or equal to the duration threshold, and controlling the [visual] object to handhold the third [visual] item, wherein the display of the item list is canceled when the continuous press ends without selection in response to disappearance of a touch control signal corresponding to the continuous press. without switching the second [visual] item.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being and/or the rules of a game.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., embodying Applicant’s abstract idea as computer code stored on a non-transitory computer readable medium that is executed on a computer processor, and/or employing a user interface, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., embodying Applicant’s abstract idea as computer code stored on a non-transitory computer readable medium that is executed on a computer processor, and/or employing a user interface, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F15 in Applicant’s PGPUB and text regarding same and, e.g., F3 and text regarding same regarding employing a user interface.
Also, to the extent that Applicant’s claims may require a human being placing his/her finger in certain locations this also does not render “significantly more” to the extent that such an action does not require any particular machine and/or the transformation of any particular article. See MPEP 2106.05(b) and (c).
Response to Arguments
Applicant argues on page 9 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive. To the extent that Applicant claims a touch screen and/or a graphical user interface these are identified not as part of the abstract idea but, instead, claimed in addition to that abstract idea. To the extent that Applicant claims, however, collecting data regarding certain body movements by a human being, analyzing that data, and providing outputs based on that analysis, such subject matter has been held to be abstract by the CAFC in decisions such as, e.g., Yousician (non-precedential). Likewise, the CAFC has also held the rules of a game such as that claimed by the Applicant to be patent ineligible. See, e.g., In re: Smith. And any number of games involve human beings making certain prescribed hand motions (see, e.g., players of Blackjack motioning for additional cards).
Applicant further argues that it has claimed a “practical application”. Applicant’s argument is not persuasive because, at best, Applicant’s claimed invention improves the human user’s experience in playing a game and is not an improvement to the functioning of the claimed computing device itself. Under numerous decisions made by the CAFC, however, such improvements to human performance are not patent eligible under the Mayo test. See, e.g.,:
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Simio, LLC v. Flexsim Software Products (2020-1171; 12/29/20), slip op, pages 19-20.
See also:
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Trading Technologies v. IGB LLC (2017-2257; 4/18/19), slip. op., page 9.
See also:
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USAA v. PNC Bank (2023-1639; 6/12/25), slip. op., pages 11-12.
Applicant argues on pages 10-11 of its Remarks that the 101 rejection fails to make the required Berkheimer finding because there is no such finding made in regard to the specific visual displays claimed by the Applicant. Such visual displays, however, are identified in the 101 rejection as being part of the abstract idea and, therefore, no such Berkhemier finding is necessary in regard to those limitations. Applicant fails to address, in addition, the “significantly more” analysis that was provided in terms of Applicant merely embodies its claimed abstract idea by employing generic computing hardware and software.
Applicant further argues on page 11 of its Remarks:
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Applicant’s arguments are unpersuasive because, likewise, Trading Technologies concerned “a particular interaction sequence and display arrangement”. See, e.g.,
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Id., slip. op., page 6. In other words, just as in the instant Application, Trading Technologies concerned an invention directed to providing a “display arrangement” to a user (“an order icon”) and based on a “particular interaction sequence” with that visual display (“selecting the order icon and moving the order icon”) taking certain actions. And the CAFC held the invention therein to be patent ineligible as being directed to an abstract idea and without claiming “significantly more”.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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